This practice gives hope to Patent Owners who may have been assuming that absent reversal, a remand was just a longer, more painful loss.

A week back in Dell Inc. v. Acceleron, LLC the Federal Circuit considered what the Board is required to do on such remands. This second appeal followed an earlier remand by the Court, which found that Dell had improperly raised a new unpatentability argument at the oral hearing. On remand, Dell was expecting to be able to have its new argument heard, and to maintain its earlier victory on a seemingly straightforward dependent claim (claim 3 of 6,948,021) directed to a computer chassis having individual caddies for mounting processor boards.

The Board declined to consider the new argument on remand and reversed its earlier decision without further input from either party.

On the second appeal, Dell argued that the Court’s earlier remand was an order for the Board to reconsider the new argument. The Federal Circuit disagreed (here), explaining:

In NuVasive, we noted the need for an adequate opportunity to respond if the Board chose to rely on a portion of a prior art reference that was not mentioned as a basis for unpatentability before the patent-owner’s response was filed. But, we did not require the Board on remand to admit new evidence in response. . . .

We disagree that NuVasive and SAS compelled the Board to consider the new evidence in this instance. We note the PTO guidelines provide that “[n]o new evidence or arguments may be presented at the oral argument.” . . .

The Board was obligated to dismiss Dell’s untimely argument given that the untimely argument in this case was raised for the first time during oral argument. . . .

Dell contends that ignoring evidence of unpatentability is against public policy because it will not improve patent quality. We find that under these circumstances, due process and preserving the Board’s discretion outweigh
any negative effects of not invalidating a patent claim, especially since our decision does not preclude another party from challenging the validity of claim 3 on the same basis.

(emphasis added, internal citations omitted)

It is worth noting that the Board’s rules not only prevent new arguments/evidence at oral argument, but also in Petitioner Reply Briefs. As such, it would seem that the Board will dispose of new argument/evidence remands without further input of the parties, and simply reverse its initial decision.

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